Moroccanoil Israel Ltd v Aldi Foods Pty Ltd

The case of Moroccanoil Israel Ltd v Aldi Foods Pty Ltd was heard in the Federal Court of Australia, where Moroccanoil Israel Ltd (MIL) brought claims against Aldi Foods Pty Ltd for trade mark infringement, misleading or deceptive conduct under the Australian Consumer Law (ACL), and passing off. MIL, an Israeli company, produces and sells hair care products globally, including in Australia, and is the registered proprietor of two Australian trade marks for Moroccanoil. Aldi Foods Pty Ltd, an Australian company, sells a range of hair care products and tools under the brand name Moroccan Argan Oil. MIL's claims included that Aldi's use of the term "Moroccan Argan Oil" in relation to its hair care products and tools was an infringement of its registered trade marks, and that the branding and get-up of Aldi's products were misleading or deceptive under the ACL, as well as a passing off action.

The legal issues in the case encompassed whether Aldi's use of "Moroccan Argan Oil" was deceptively similar to MIL's trade marks, whether the hair brushes and tools were goods of the same description as those for which MIL's trade marks were registered, and whether the use of "Moroccan Argan Oil" was likely to deceive or cause confusion. Additionally, the court had to determine whether MIL's trade marks were inherently adapted to distinguish its goods and whether they were to some extent inherently adapted to distinguish its goods, and if so, whether they did or would distinguish the goods as MIL's. The court also examined whether the representations made by Aldi in relation to the naturalness and effectiveness of its products were misleading or deceptive under the ACL.

The Federal Court held that Aldi's use of "Moroccan Argan Oil" was not deceptively similar to MIL's registered trade marks, and that the hair brushes and tools were not goods of the same description as those for which MIL's trade marks were registered. Consequently, the trade mark infringement claim was dismissed. Regarding the ACL claims, the court found that while the branding and get-up of Aldi's products did not constitute misleading or deceptive conduct, the use of the term "naturals" was misleading as it implied that the products contained substantially natural ingredients, which was not the case. Furthermore, Aldi's claims about the performance benefits of its products, particularly the contribution of argan oil, were found to be misleading since the amount of argan oil used was insufficient to substantiate the claims. The passing off claim was also dismissed. The cross-claim for rectification of the Register was partially allowed, with certain goods being removed from the registration of MIL's trade marks.

The court allowed the appeal against the Registrar's decision to oppose the registration of MIL's trade mark "moroccanoil", finding that the mark was to some extent inherently adapted to distinguish MIL's goods and that it did distinguish the designated goods because of the extent of MIL's use of the mark in Australia prior to the application date. The court set aside the Registrar's decision, dismissed Aldi's notice of opposition, and ordered the registration of the trade mark "moroccanoil". The court also ordered Aldi to pay MIL's costs of the appeal and the opposition proceeding.